TradeMark and Domain Name conflicts

[Avery]

Hi folks.
I am keen to use a particular name to promote my digital services. I have registered a few domain names in order to achieve this.

However, I want to be able to use the domain I have registered without it being challenged.

Here is my situation. I have recently bought the domain name 'myservices.uk' [not the real domain name]. One other domain '.co.uk' is being auctioned and the '.com' is being used by someone in the US.

I would like to be able to TradeMark 'My Services' for use in the UK.

This would hopefully allow me to get control of the '.co.uk' without having to buy it (and protect my '.uk').

.. .. Also, if this would lead me to be able to control '.com', that would also be great, but this is not essential.


Domains ::

myservices.com ... [Owned by American company 'Go Digital']
myservices.uk ... [Owned by me]
myservices.co.uk ... [Owned by no one. Being auctioned by Dan.com (GoDaddy) for over £1000]


TradeMarks ::

My Services ... [US TM :: Owned by American company 'Cyber Holdings']
My Services ... [UK TM :: No TM / it's Available]


I understand that there is already US legislation against 'cyber squatting', which sides with the TM owner. So if someone buys a Domain with the same name as an existing TM, in the hope of gaining advantage over the TM owner, the legislation protects the TM owner.

However, what if I now register the TradeMark for 'My Services' in the UK? .. will this render the '.co.uk' domain useless to anyone except for me?

... as for the '.com' I appreciate that this is a bit more of a stretch.. even though there are two different US companies involved.


I have searched here first, and I have already got a lot of information from this website...
https://www.nibusinessinfo.co.uk/con...-be-trade-mark

... but I think the above question is the only one which hasn't yet been answered on this particular subject.


Any help would be most welcome. Thanks

[dslippy]

With .com, the trae mark powner has absolute control.
With .co.uk there are rules agains so called abusive registrations. If you have a trade mark, you have a good head start, but the registration may itself be challenged as abusive.

Not quite sure which your question was.

[Avery]

Thanks. I guess my Q is

"Will registering the TM in the UK, protect my '.uk' domain, and prevent any possible '.co.uk' owner (and the American '.com' owner, or American TM owner) from challenging me in the UK?"

I noticed that registering a TM in one country, is for that one country only.

[dslippy]

Regiatering a trade mark carries baggage. If you do not show at least some relevant activity it can be set aside.

[Avery]

Regiatering a trade mark carries baggage. If you do not show at least some relevant activity it can be set aside.

Please can you elaborate on 'baggage', 'relevant activity' and 'set aside'?

Re 'relevant activity', if you mean I that the TM registrant should ideally be using the name to trade under, then that won't be a problem, because I would use it on my website with the 'myservices.uk' domain.

[dslippy]

You cannot just register a trade mark and expect it to survive. If you do not carry out any trade mark activities, it can be istelf set aside as abusive - name parking. Using a web site to support a trade mark to support a web-site might be seen as circular.
The essence is trading under the mark. It does not need a lot.

[Avery]

You cannot just register a trade mark and expect it to survive. If you do not carry out any trade mark activities, it can be istelf set aside as abusive - name parking. Using a web site to support a trade mark to support a web-site might be seen as circular.
The essence is trading under the mark. It does not need a lot.

I see your point, thank you.

This will be ok. I won't be setting up a website just to park the TM. It will be used to promote actual services, that I will provide using the [intended TM] biz name (trading as "My Services").

[Avery]

No one has given me a definitive answer on getting control or ownership over the '.co.uk' as of yet.

.. But that's ok. I appreciate that I may need a consultation with a TradeMark attorney.

In the interest of helping others, I have found a very useful page on Series Marks:
https://www.gov.uk/guidance/trade-ma...s-applications

It seems that some domain name combinations are possible, but not all.

[ostell]

Have you tried contacting Nominet about the abuse of the .co.uk name ? I've managed to drag a .co.uk domain name out of somebody's grasping fingers.

[Avery]

Have you tried contacting Nominet about the abuse of the .co.uk name ? I've managed to drag a .co.uk domain name out of somebody's grasping fingers.

Wow, nice job. I will contact Nominet and explore my options. Thank you.